Appeal No. 2000-0084 Page 6
Application No. 08/619,672
was cited by the examiner for its showing of a particular counterpressure tool structure.
The combined teachings of these two references therefore fail to establish a prima facie
case of obviousness with regard to claims 15, 16 and 18 which, of course, incorporate all
of the limitations of claim 9, from which they depend. This rejection will not be sustained.
We reach the same conclusion with regard to the rejection of claim 17 on the basis
of Ariel in view of either Cummings or Bray, for the secondary references also do not
alleviate the shortcoming in Ariel.
New Rejection Made By The Board
Pursuant to our authority under 37 CFR 1.196(b), we enter the following new
rejection:
Claims 9, 11-13 and 15-18 are rejected under 35 U.S.C. § 112, second paragraph,
as being indefinite in that they fail to particularly point out and distinctly claim the subject
matter which the appellants regard as their invention.
While we are mindful that the appellants are free to claim their invention in broad
terms and are entitled to the broadest reasonable interpretation of the claim language,
because a patentee has the right to exclude others from making, using and selling the
invention covered by the patent (35 U.S.C. §154), the public must be apprised of exactly
what the patent covers, so that those who would approach the area
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